ITALY Law and Practice Contributed by: Monica Riva, Alessandra Ottolini, Francesco Chierichetti and Giulia Ghidini, Legance
Legance Via Broletto, 20 20121, Milan Italy Tel: +39 028 963 071 Fax: +39 028 9630 7810 Email: mriva@legance.it Web: www.legance.com
1. Patents 1.1 Legal Framework and Patentable Subject Matter Sources of Law Patent protection in Italy is governed mainly by Arti- cles 45–81-octies and 117–146 of the Italian Indus- trial Property Code (Legislative Decree No 30/2005, the IP Code), together with Articles 2584–2591 of the Civil Code. The framework is supplemented by the European Patent Convention, the Patent Coopera- tion Treaty, the Paris Convention, the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) and relevant EU rules, including those on bio- technology and supplementary protection certificates. Italian patent law is also shaped by the case law of the specialised business courts. For European patents, the Unified Patent Court (UPC) is relevant where the patent falls within its jurisdiction and has not been opted out. Patentable Subject Matter A patentable invention must provide a technical solu- tion to a technical problem and satisfy the require- ments for novelty, inventive step and industrial appli- cability. Protection may cover products or processes, including mechanical devices, chemical and pharma- ceutical products, manufacturing processes, medical devices, biotech inventions and computer-implement- ed inventions. Exclusions Discoveries, scientific theories, mathematical meth- ods, aesthetic creations, business methods, pres- entations of information and computer programs
are excluded. The exclusion is interpreted narrowly: software and AI-related inventions may be patent- able where they produce a technical effect beyond the normal interaction between software and hard- ware. Methods for surgical, therapeutic or diagnostic treatment of the human or animal body are excluded, although products for use in such methods may be patentable. Plant varieties, animal breeds and essen- tially biological processes are also excluded. Utility Models Utility models are available for new technical solutions concerning the shape, structure or arrangement of a product that confer a functional advantage. Protection lasts for ten years from filing. 1.2 Patent Granting Procedure Filing and Examination Italian patent applications are filed with the Italian Patent and Trade Mark Office (UIBM). The application must identify the applicant, describe the invention and include claims and, where relevant, drawings, and the filing fees must be paid. UIBM checks formal requirements, unity of invention and manifest exclusions from patentability. For nation- al filings, the European Patent Office (EPO) normally carries out the prior art search and issues a search report and written opinion. The applicant may respond with observations or amendments, without extending the application beyond its original content. If objec- tions remain, UIBM may request further replies before granting or refusing the application; refusals may be appealed.
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